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Books Titles Unregistrable as Trademarks in Canada

In a decision that could significantly impact rights-holders in the media and entertainment industries, the Federal Court has suggested that book titles are, prima facie, not properly registrable as trademarks in Canada.

In Drolet v. Stiftung Gralsbotchaft (2009 FC 17) the court was tasked with considering a range of copyright and trademark issues. The litigants were all involved in the Grail Message movement—a religious movement centred around a series of writings prepared in Germany in the 1920s and 1930s. The plaintiff sought to expunge the defendant’s Canadian trademark registrations pertaining to the title of a book central to the movement for reasons relating to descriptiveness.

First applying the conventional analysis proscribed under s. 12(1)(b) of the Trade-marks Act (the “Act”) to determine if the mark was “clearly descriptive”, the court concluded the mark did not meet this test, as the title did not convey to a consumer a clear indication of the book’s contents or subject matter. However, writing for the court Mr. Justice de Montigny went on to assert:

I am nevertheless of the opinion that the title of a literary work is inherently descriptive not because it conveys information on the content of the work but because it is the only way to identify the work in question. Thus the title cannot be dissociated from the work itself. Indeed, how could a publishing house identify a book it publishes other than by its title?

Additionally, though the court noted that the definition of wares as set out in the Act includes reference to “printed publications”, it was not persuaded that this was evidence of Parliament’s intention that books (and by extension, their titles) were registrable under the Act. The court observed that even if the reference to “printed publications” did include books, the other tests for registrability of a mark under the Act had still to be applied, and a book title would not be registrable for reasons of descriptiveness.

Finally, the court turned to the Canadian Copyright Act to support its conclusions, noting the rights afforded under that legislation are provided for a limited period. Once that period expires, the court noted, Parliament’s intent was for the work to become part of the public domain. The court argued (unconvincingly, in this writer’s opinion) that if a book title was registrable under the Trade-marks Act, this would have the effect of defeating Parliament’s intent in the Copyright Act.

The potential impact of this decision is significant: prior to it, Canada was one of only a handful of countries that permitted the registration of book titles as trademarks. More broadly, the court’s logic in this case would also seem to apply to movie titles and other non-serialized, copyright-protected works. Yet, despite the decision’s import, only a few othercommentators have discussed this aspect of the case.

It remains to be seen if subsequent courts will follow the lead of the Federal Court in Drolet. Though it aligns Canadian law with that of other countries on this point, certain aspects of the decision appear at odds with the Act—particularly that which finds a book title’s “inherently descriptive” nature is sufficient to cross the “clearly descriptive” threshold set out in the Act relating to registrability.